The Complainant is Bitpanda GmbH, Austria, represented by Schönherr Rechtsänwalte GmbH, Austria.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2021. On September 20, 2021, and again on October 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. After further delays, on November 24, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of the default on December 27, 2021.
The Center appointed Steven Auvil as the sole panelist in this matter on January 13, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant is a digital assets service provider with the Austrian Financial Market Authority and the French Autorité des marchés financiers. The Complainant operates the trading platform Bitpanda for digital assets such as cryptocurrencies, precious metals, equities, and ETFs based in Vienna, Austria. The Complainant has more than 500 team members and 3 million users worldwide.
The Complainant owns marks in connection with the BITPANDA brand, including inter alia: European Union Trade Mark No. 17496894 (registered on March 15, 2018), European Union Trade Mark No. 17496928 (registered March 12, 2018), and United States Registration No. 5658447 (registered January 22, 2019). The Complainant also owns the domain name
The disputed domain name
The Complainant alleges that the disputed domain name is confusingly similar to its BITPANDA mark because the disputed domain name is the same except that it introduces a descriptive element with the word “platform”. The Complainant contends that the disputed domain name is likely to cause confusion for consumers legitimately searching for the Complainant’s website “www.bitpanda.com”.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not affiliated with the Complainant and has never obtained a license from the Complainant to use the BITPANDA mark.
The Complainant further asserts that the Respondent registered or used the disputed domain name in bad faith because the Respondent’s primary purpose in registering the disputed domain name was to create a false and misleading impression that the Respondent acts in affiliation with the Complainant and wants to use the Complainant’s goodwill and fame associated with the BITPANDA mark.
The Complainant requests that the disputed name be transferred to the Complainant.
B. RespondentThe Respondent did not respond to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules: “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed allegations pursuant to paragraphs 5(e), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (finding in the absence of a response, it is appropriate to accept “as true all of the allegations of the complaint”).
Based on the foregoing guidance, the Panel makes the following findings and conclusions on the basis of the allegations and evidence contained in the Complaint and reasonable inferences drawn from them.
A. Identical or Confusingly SimilarThe Complainant is the owner of several registered service marks for BITPANDA. The Panel therefore finds that the Complainant has rights in the BITPANDA mark.
As set forth in section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable Top Level Domain (e.g.,”.com”, “.site”, “.info”, “.shop”) “is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” Therefore, the presence of “.net” in the disputed domain name is irrelevant to the Panel’s decision.
Section 1.8 of WIPO Overview 3.0 states that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” See also Bardón y Rufo 67, S.L. v. Marko Mattila, Auto Katti, S.L.,WIPO Case No. D2012-1192; Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413.
It is further understood that when a disputed domain name fully incorporates a complainant’s registered mark, it is indicative of the disputed domain name being identical or confusingly similar. See section 1.7 of WIPO Overview 3.0; see also Philip Morris Products S.A. v. Mehmet Cam,WIPO Case No. D2020-0698 and Carvana, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Lenny Mathewson,WIPO Case No. D2020-3405.
Here, the addition of the word “platform” and a hyphen to the Complainant’s BITPANDA mark in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s mark.
The disputed domain name consists of the word “platform” followed by a hyphen and the BITPANDA mark. The disputed domain name incorporates the Complainant’s entire BITPANDA mark.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant’s mark. Therefore, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate InterestsFrom the Complainant’s allegations and evidence and the inferences drawn from them, the BITPANDA mark is a distinctive and well-known mark registered by the Complainant. As noted, the Complainant has more than 500 team members and 3 million users. The Complainant additionally holds and operates over 280 domain names containing the BITPANDA mark, for its worldwide presence. The Complainant did not license or otherwise authorize the Respondent’s use of the BITPANDA mark. Therefore, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Furthermore, the disputed domain name incorporates the entirety of the Complainant’s mark and resolved to a login portal that resembled the Complainant’s trading platform. Accordingly, the Panel finds a clear risk of implied affiliation, and the Respondent has shown no bona fide offering of goods or services. See section 2.5 of WIPO Overview 3.0; see also Felix International Limited v. Leandro Vinicius Bau,WIPO Case No. D2021-0584.
Section 2.1 of WIPO Overview 3.0 provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Here, the Respondent did not respond to the Complaint and thus has failed to rebut the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent in fact has no rights or legitimate interests in the disputed domain name and that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad FaithSection 3.1.4 of WIPO Overview 3.0 provides that “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Additionally, section 3.2.1 of WIPO Overview 3.0 provides that “[p]articular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion) [...] (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant.”
Here, as noted above, the disputed domain name incorporates the entirety of the Complainant’s well‑known BITPANDA mark. Further, at the time the Complaint was filed, the disputed domain name resolved to a login portal that resembled the Complainant’s trading platform and looked as though it was associated with the Complainant, suggesting an intent to defraud the Complainant’s customers. Indeed, the resemblance could deceive unsuspecting users into providing their account and deposit information. The Panel finds that the Complainant clearly knew of the Complainant and its BITPANDA mark at the time of registration of the disputed domain name and attempted to pass itself off as the Complainant and take unfair advantage of the BITPANDA mark.
Additionally, the Respondent provided no evidence demonstrating rights or legitimate interests in the disputed domain name, nor has the Respondent provided any explanation for the domain name choice or use.
Noting the above, the current non-use of the disputed domain name does not prevent a finding of bad faith. See section 3.3 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the third element of paragraph 4(a) of the Policy is satisfied.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Steven Auvil
Sole Panelist
Date: January 27, 2022